Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1061879
`
`Filing date:
`
`06/15/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Solvay SA
`
`SA (corporation)
`
`Citizenship
`
`Belgium
`
`Rue de Ransbeek 310
`Brussels, B-1120
`BELGIUM
`
`Rebecca Liebowitz
`Venable LLP
`P.O. Box 34385
`Washington, DC 20043-9998
`UNITED STATES
`rliebowitz@venable.com, trademarkdocket@venable.com
`2023444976
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5725016
`
`Registration date
`
`04/16/2019
`
`Registrant
`
`GREGORI, JEANNE M
`295 Bentley Court
`Pacheco, CA 94553
`UNITED STATES
`Email: projectsolvay@gmail.com
`
`Goods/Services Subject to Cancellation
`
`Class 041. First Use: 2017/12/01 First Use In Commerce: 2017/12/01
`All goods and services in the class are subject to cancellation, namely: Educational services, namely,
`training services, and development, production and post-production services in the field of document-
`ary films, and development and dissemination of printed educational materials of others, all in the
`field of human rights and rule of law issues relating to preventing human trafficking anddistribution of
`course and educational materials in connection therewith
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or bring them into contempt, or disrep-
`ute
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(3) and 2(a)
`
`Related Proceed-
`
`A Notice of Opposition is being filed concurrently with respect to Application
`
`
`
`ings
`
`Serial No. 88/353802
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`SOLVAY
`
`educational, scientific and humanitarian endeavors
`
`Attachments
`
`SLVAY Solvay v. Jeanne Gregori PROJECT SOLVAY Petition for Cancella-
`tion.pdf(13699 bytes )
`
`Signature
`
`/Rebecca Liebowitz/
`
`Name
`
`Date
`
`Rebecca Liebowitz
`
`06/15/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SOLVAY SA
`
`Petitioner,
`
`
`
`v.
`
`Jeanne M. Gregori
`
`
`
`Registrant.
`
`
`
`Attorney’s Reference: 32232-523946
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Cancellation No.
`Registration No. 5725016
`
`PETITION FOR CANCELLATION
`
`In the matter of the Registration No. 5725016 for the trademark PROJECT SOLVAY
`
`owned by Jeanne M. Gregori (“Registrant”), and issued on April 16, 2019.
`
`Solvay SA (“Petitioner”), a Belgian corporation with an address at Rue de Ransbeek 310,
`
`B-1120 Brussels, Belgium believes that it will be damaged by continued registration of the mark
`
`shown in said Registration No. 5725016, and hereby petitions to cancel the same:
`
`As grounds for cancellation it is alleged that:
`
`1.
`
`Petitioner is a Belgian based international company founded in 1863, with
`
`multinational operations in 62 countries, including throughout the United States.
`
`2.
`
`Petitioner employs its scientific, technical and commercial expertise to
`
`responsibly provide innovative products and services related to chemistry and
`
`human health.
`
`3.
`
`Petitioner is well known as being among the world leaders in several commodity
`
`chemicals, including soda ash, hydrogen peroxide, persalts, barium and strontium
`
`carbonate, and caustic soda, as well as such specialty chemicals as
`
`fluorochemicals.
`
`
`
`4.
`
`Petitioner, through its predecessors in interest, has operated in the United States
`
`since 1881, with its interests in the United States reorganized in 1984 under the
`
`holding company Solvay America, Inc.
`
`5.
`
`Petitioner engages in corporate philanthropy that is principally directed to
`
`educational, scientific and humanitarian endeavors in the United States and
`
`around the globe.
`
`6.
`
`Petitioner, at the corporate level, concentrates its philanthropic or funding efforts
`
`in numerous areas, including support to humanitarian initiatives in reaction to
`
`certain disasters and/or where its products or services are of particular value.
`
`7.
`
`Beyond Petitioner's philanthropy at the corporate level, each Solvay site, including
`
`those in the United States, engages in projects supporting the communities in
`
`which it operates.
`
`8.
`
`As a result of its widespread, continuous and exclusive use of the SOLVAY name
`
`and mark to identify its various products, services and philanthropic endeavors,
`
`Petitioner owns valid and subsisting common law rights to the SOLVAY name
`
`and mark.
`
`9.
`
`On March 10, 2018 Registrant filed Application Serial No. 87/828945 to register
`
`the mark PROJECT SOLVAY in connection with “Educational services, namely,
`
`training services, and development, production and post-production services in the
`
`field of documentary films, and development and dissemination of printed
`
`educational materials of others, all in the field of human rights and rule of law
`
`issues relating to preventing human trafficking and distribution of course and
`
`educational materials in connection therewith.” Use of that mark since December
`
`1, 2017 is alleged.
`
`- 2 -
`
`
`
`10.
`
`Application Serial No. 87/828945 issued as Registration No. 5725016 on April
`
`16, 2019.
`
`11.
`
`Petitioner's name and mark SOLVAY has priority over Registrant's alleged mark
`
`because Petitioner's use of that name and mark in the U.S. predates the
`
`Registrant's filing date or any other date on which the Registrant may rely for
`
`purposes of priority.
`
`12.
`
`The term SOLVAY in the Registrant's alleged mark is identical to Petitioner's
`
`name and mark SOLVAY.
`
`13.
`
`Registrant’s use and registration of the alleged mark PROJECT SOLVAY is
`
`likely to cause confusion or to deceive consumers and the public about the
`
`affiliation or association of the Registrant with the Petitioner within the meaning
`
`of and in violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
`
`14.
`
`Consumers are likely to be confused and to mistakenly believe that Registrant’s
`
`services offered under its alleged mark PROJECT SOLVAY either emanate from
`
`or are licensed by, sponsored by, a project of or are associated with Petitioner.
`
`15.
`
`If the Registrant is permitted to use and maintain the registration of its mark for its
`
`services as specified in its registration, confusion among consumers resulting in
`
`damage and injury to Petitioner would be caused by virtue of the similarity
`
`between Registrant’s alleged mark PROJECT SOLVAY and Petitioner’s name
`
`and mark SOLVAY. Any defect, objection or fault found with Registrant’s
`
`services would reflect upon, seriously injure, and damage the reputation and value
`
`that Petitioner has established under its SOLVAY name and mark.
`
`16.
`
`As a result of its distinctiveness and widespread use and promotion throughout the
`
`United States, Petitioner's SOLVAY name and mark is a famous trademark within
`
`- 3 -
`
`
`
`the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), and it
`
`became famous prior to the filing date of Registrant's application or any other
`
`priority date on which Registrant may rely.
`
`17.
`
`Continued registration and use by Registrant of the alleged mark PROJECT
`
`SOLVAY for Registrant's services would be likely to impair the distinctiveness,
`
`and cause dilution by blurring, of Petitioner's famous name and mark SOLVAY in
`
`violation of 15 U.S.C. § 1125(c). Accordingly, pursuant to 15 U.S.C. 1064,
`
`Registrant's alleged mark PROJECT SOLVAY is not entitled to continued
`
`registration.
`
`WHEREFORE, Petitioner prays that Registration No. 5725016 be cancelled, and that
`
`this cancellation proceeding be sustained in favor of the Petitioner.
`
`This Petition for Cancellation is submitted together with the statutory filing fee of
`
`$400.00 (Class 41). Should any additional fee be required, please charge the same to our
`
`Account No. 22-0261 and notify the undersigned accordingly.
`
`Petitioner appoints Rebecca Liebowitz, Catherine Mitros, Tanya Curcio and Renato Perez
`
`along with the law firm of Venable LLP, P.O. Box 34385, Washington, D.C. 20043-9998 to
`
`transact all business on its behalf in connection with this Petition for Cancellation.
`
`Date: June 15, 2020
`
`Respectfully submitted,
`
`/Rebecca Liebowitz/
`By: _______________________________
`
` Attorneys for Petitioner
` Rebecca Liebowitz
` Catherine Mitros
` Tanya Curcio
` Renato Perez
` VENABLE
` P.O. Box 34385
` Washington, D.C. 20043-9998
` Telephone: 202-344-4976
`
`- 4 -
`
`
